| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86647537 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86647537/large |
| LITERAL ELEMENT | RANA |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
RESPONSE Identification of Services Please amend the identification of services to read as follows:
REMARKS Descriptiveness The Examining Attorney has refused registration under the Trademark Act Section 2(e)(1) on the grounds that the mark RANA is merely descriptive of Applicant’s services, contending that RANA is an abbreviation for “RA(Rheumatoid Arthritis)-Associated Nuclear Antigen” and that the mark is therefore descriptive. The refusal to register is respectfully traversed. Here, Applicant’s mark, RANA is at most, merely suggestive of the underlying goods, namely, software for use in interactive biomedical visualization and simulations. Suggestive marks are those which require imagination, thought or perception to reach a conclusion as to the nature of the goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. T.M.E.P. § 1209.01(a) (In re Shutts, 217 U.S.P.Q. 363, 365 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool)); Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557, 560 (T.T.A.B. 1975), aff'd, 189 U.S.P.Q. 348, 351 (C.C.P.A. 1976) (BIASTEEL for steel belted bias tires held only suggestive, not descriptive, as a composite term). Here, the Examiner relies on an internet search which revealed that RANA is an acronym for “RA(Rheumatoid Arthritis)-Associated Nuclear Antigen.” However, RANA is a term coined by Applicant which was intended to be a play on RNA. Specifically, Applicant’s research focuses on activating genes by targeting RNA. Applicant has spearheaded the discovery of revolutionary RNA-targeted medicines that selectively upregulate gene expression within cells in the body. These oligonucleotides, “oligos,” are molecules designed to target specific areas of RNA; Applicant’s oligos are highly selective and can be used to target the vast majority of genes within the human genome. Applicant’s approach has broad therapeutic potential, opening up a vast number of hard-to-treat disease targets with significant need. Though these therapeutic targets include various forms of inflammatory disease, RANA was neither coined nor selected to have any connotation related to Rheumatoid Arthritis. It is well established that to be characterized as “descriptive,” a mark must directly give some reasonably accurate or distinct knowledge of the characteristics of the product or service. If information about the product or service given by the mark is indirect or vague, then this indicates that the mark is being used in a “suggestive,” not descriptive, manner. Here, Applicant’s mark, RANA is merely suggestive of the underlying services, which broadly relate to RNA. In the present case, Applicant coined the term RANA to connote the activation of genes which target RNA. This mark is previously unused in the industry. It is a coined phrase that has a unique and memorable aspect, which in turn gives the term source-identifying power. When the mark is viewed in its entirety, as it is viewed in the market place, it is capable of distinguishing Applicant’s goods and services from those of others. No consumer would hear or see RANA and immediately understand what type of product or services the mark was being used in connection with. Thus, RANA is merely suggestive and should be registrable on the Principal Register without any exclusionary language. Finally, in support of registrability of the trademark, without any evidence of consumer understanding of any special meaning of the trademark, it must be assumed registrable. In re American Fertility Society, 51 U.S.P.Q.2d 1832, 1837 (Fed. Cir. 1999) (“[T]here was no evidence produced that the term is used by the relevant public to refer to a similar class.”) Failure to Function Applicant has amended its services to “conducting scientific and medical research in the field of genetics and pharmaceutical development for others,” underscoring that a big component of Applicant’s services relates to conducting research for others. In fact, since launching, Applicant has modified its website to include its focus on establishing partnerships with external organizations (see http://ranarx.com/partnerships/ and Exhibit A for more detail). Applicant believes that the amendment to the identification of services coupled with the initial specimen that was submitted is sufficient to establish use of the service mark. Though the initial specimen did not emphasize Applicant’s external partnerships, it shows use of the mark in connection with research and development related to oligonucleotides, which could be interpreted broadly to include research and development for others. In the event the Examining Attorney disagrees, Applicant requests that the mark be amended to reflect an intent-to-use basis. Declaration A clear depiction of the declaration that was initially submitted is included herewith. Significance of the Mark Applicant coined the term RANA to connote the activation of genes which target RNA. RANA is not a term of art. To the best of Applicant’s knowledge, RANA neither identifies a geographic place nor has any meaning in a foreign language. Conclusion If it is convenient for the Examining Attorney and if it is believed a telephone conference will further the prosecution of this application, Applicant’s undersigned counsel encourages a telephone call from the Examining Attorney. In view of the foregoing, Applicant believes the application is in condition for publication. Such action is solicited.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_38111352-20160311140019284323_._RANA_Exhibit_A.PDF |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\866\475\86647537\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\866\475\86647537\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\475\86647537\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\866\475\86647537\xml4\ROA0005.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A referenced in Response |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| conducting scientific and medical research in the field of genetics and pharmaceutical development | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/00/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/00/2012 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 042 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Conducting scientific and medical research in the field of genetics and pharmaceutical development for others | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/00/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/00/2012 |
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | RANA appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) RANA has no meaning in a foreign language. |
| SIGNATURE SECTION | |
| ORIGINAL PDF FILE | HS_38111352-140019284_._RANA_Declaration.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\866\475\86647537\xml4\ROA0006.JPG |
| SIGNATORY'S NAME | Paul Burgess |
| SIGNATORY'S POSITION | VP Intellectual Property |
| RESPONSE SIGNATURE | /cml/ |
| SIGNATORY'S NAME | Christina M. Licursi |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | (617) 646-8384 |
| DATE SIGNED | 03/11/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Mar 11 14:10:34 EST 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 60311141034354719-8664753 7-550fd21d511db67e882ba0d 62f5e166272cda2c450629f79 b8e917daf319476646-N/A-N/ A-20160311140019284323 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
RESPONSE
Identification of Services
Please amend the identification of services to read as follows:
REMARKS
Descriptiveness
The Examining Attorney has refused registration under the Trademark Act Section 2(e)(1) on the grounds that the mark RANA is merely descriptive of Applicant’s services, contending that RANA is an abbreviation for “RA(Rheumatoid Arthritis)-Associated Nuclear Antigen” and that the mark is therefore descriptive. The refusal to register is respectfully traversed.
Here, Applicant’s mark, RANA is at most, merely suggestive of the underlying goods, namely, software for use in interactive biomedical visualization and simulations. Suggestive marks are those which require imagination, thought or perception to reach a conclusion as to the nature of the goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. T.M.E.P. § 1209.01(a) (In re Shutts, 217 U.S.P.Q. 363, 365 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool)); Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557, 560 (T.T.A.B. 1975), aff'd, 189 U.S.P.Q. 348, 351 (C.C.P.A. 1976) (BIASTEEL for steel belted bias tires held only suggestive, not descriptive, as a composite term).
Here, the Examiner relies on an internet search which revealed that RANA is an acronym for “RA(Rheumatoid Arthritis)-Associated Nuclear Antigen.” However, RANA is a term coined by Applicant which was intended to be a play on RNA.
Specifically, Applicant’s research focuses on activating genes by targeting RNA. Applicant has spearheaded the discovery of revolutionary RNA-targeted medicines that selectively upregulate gene expression within cells in the body. These oligonucleotides, “oligos,” are molecules designed to target specific areas of RNA; Applicant’s oligos are highly selective and can be used to target the vast majority of genes within the human genome. Applicant’s approach has broad therapeutic potential, opening up a vast number of hard-to-treat disease targets with significant need. Though these therapeutic targets include various forms of inflammatory disease, RANA was neither coined nor selected to have any connotation related to Rheumatoid Arthritis.
It is well established that to be characterized as “descriptive,” a mark must directly give some reasonably accurate or distinct knowledge of the characteristics of the product or service. If information about the product or service given by the mark is indirect or vague, then this indicates that the mark is being used in a “suggestive,” not descriptive, manner. Here, Applicant’s mark, RANA is merely suggestive of the underlying services, which broadly relate to RNA.
In the present case, Applicant coined the term RANA to connote the activation of genes which target RNA. This mark is previously unused in the industry. It is a coined phrase that has a unique and memorable aspect, which in turn gives the term source-identifying power. When the mark is viewed in its entirety, as it is viewed in the market place, it is capable of distinguishing Applicant’s goods and services from those of others. No consumer would hear or see RANA and immediately understand what type of product or services the mark was being used in connection with. Thus, RANA is merely suggestive and should be registrable on the Principal Register without any exclusionary language.
Finally, in support of registrability of the trademark, without any evidence of consumer understanding of any special meaning of the trademark, it must be assumed registrable. In re American Fertility Society, 51 U.S.P.Q.2d 1832, 1837 (Fed. Cir. 1999) (“[T]here was no evidence produced that the term is used by the relevant public to refer to a similar class.”)
Failure to Function
Applicant has amended its services to “conducting scientific and medical research in the field of genetics and pharmaceutical development for others,” underscoring that a big component of Applicant’s services relates to conducting research for others. In fact, since launching, Applicant has modified its website to include its focus on establishing partnerships with external organizations (see http://ranarx.com/partnerships/ and Exhibit A for more detail).
Applicant believes that the amendment to the identification of services coupled with the initial specimen that was submitted is sufficient to establish use of the service mark. Though the initial specimen did not emphasize Applicant’s external partnerships, it shows use of the mark in connection with research and development related to oligonucleotides, which could be interpreted broadly to include research and development for others. In the event the Examining Attorney disagrees, Applicant requests that the mark be amended to reflect an intent-to-use basis.
Declaration
A clear depiction of the declaration that was initially submitted is included herewith.
Significance of the Mark
Applicant coined the term RANA to connote the activation of genes which target RNA. RANA is not a term of art. To the best of Applicant’s knowledge, RANA neither identifies a geographic place nor has any meaning in a foreign language.
Conclusion
If it is convenient for the Examining Attorney and if it is believed a telephone conference will further the prosecution of this application, Applicant’s undersigned counsel encourages a telephone call from the Examining Attorney. In view of the foregoing, Applicant believes the application is in condition for publication. Such action is solicited.
